Marley (U.K.) Limited, Re

This matter concerned an application by MARLEY (U.K.) LIMITED, a British company, to register a trade mark under section 45(1)(b) of the Act. This provision allows for registration even if the applicant does not use or propose to use the mark, provided an application is made to record a registered user and the Registrar is satisfied that the proprietor intends the mark to be used by that person and that the person will be registered as a registered user. The applicant sought to register THE MARLEY COMPANY (N.Z.) LIMITED, a New Zealand company, as a registered user.

The legal issue before the delegate was whether the statutory declaration lodged by the applicant sufficiently demonstrated the degree of control the proprietor would have over the permitted use of the trade mark by the proposed registered user, as required by section 74(2)(a) of the Act. The examiner had objected that the declaration did not provide sufficient particulars of control, specifically regarding the proprietor's connection with the goods and the manner of mark application, suggesting a need for details on quality control.

The delegate reasoned that section 74(2)(a) requires particulars of the relationship between the proprietor and the proposed registered user, including particulars showing the degree of control the relationship confers. Drawing on established legal commentary from Australia, the United Kingdom, and South Africa, the delegate concluded that where a controlling financial interest exists, such as in the case of a wholly owned subsidiary, the proprietor is inherently in a position to control the use of the mark. The delegate found that the declaration, by stating that both the applicant and the proposed user were wholly controlled by MARLEY plc, satisfied this requirement. The delegate distinguished this from situations involving independent parties, where specific quality control mechanisms would need to be detailed.

The delegate determined that the applicant had fulfilled the requirements of section 74(2)(a) and that the application for registration was therefore entitled to be accepted under section 45(1)(b) of the Act.